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MODULE 3: TRADEMARKS AND GENERATION NEXT

In today’s world where tapping into the any and every possible kind of platform which might
potentially fetch the players their much desired turnovers, would just do whatever it takes
for accomplishing so. The tech-scape of today’s world is not what it used to be back then,
when the era was driven more in an analog and manual way while now it’s it has gone all
digital savvy. So, in order to work out in the new normal with the velocity of opportunity,
the business entities are fairly eyeing just on something which may be referred to as the
new epicenter of a virtual marketplace which is as crucial or perhaps more crucial than the
existing conventional ones to begin with. Speaking of virtual marketplace, well, that most
certainly brings us to the brink where we see an incredibly vast pool of infosphere which
effectively exhibits augmented virtuality. No wonder, this simulated e-world is the
cyberspace, the internet for that matter, can be utilized by its incredible potential of
carrying out countless interactions, transnational transactions at a lightning fast rate that
too with a multiplicity of those numbers in its nature, is all set already to have the best
being leveraged from the same.

So, let us try seeing a bigger picture in this merry story of transitional phase. The
organizations do realize that they need to get as customer centric as they can possibly get.
So, which brings us to the story where the organizations try blurring the borders and get
global since they do not wish to get limited to only one or just few localized demographic
zones, thus, they tend striving for a morphed state and get themselves molded for an
enhanced digital go. Hence, considering the fact that all the players want to step into the
cyber world due to a serious need to have the access and reach to the somewhat wider
world and the people who live in, so that serves to the whole purpose of integrating
information in a new format of business power play of data-intensive performance over the
same old game. Now having doing so, what they essentially try striking at is, optimizing their
supply chains, even there, where it is highly virtual since trade channels of the business
giants generally are vast, versatile and far from simple and are not willing to miss out being
ambidextrous.

Giants like Google, Amazon, IBM, Yahoo, eBay etc. like any other chosen Forbes best
companies who just happen to be the ones for naming a few, have cunningly adapted to the
changing scenarios at the current moment. Those players have responded to the paradigm
shift and have actually incorporated the needy alterations that were supposed to be present
as essentials in their business models while keeping a view to optimize their global
operations by outreaching to the masses and defying the traditional norms and practices
which they practiced, not too long ago. Going mainstream in the World Wide Web has
managed to place itself in the recent CEO Agendas given the fact that we are already
immersed in the seamless depth of waters of the digital tsunami. The stakes are incredibly
high and skyrocketing, the impact sustained now gets embryonic, the projections and
predictions are crossing the industry’s most resilient and daring visionaries. Thus, calling for
a change where time seems ripe enough as they step into the cyber arena and stress more
onto the identity aspect of its management and various other intellectual pool of data
assemblage. If we are concerned enough for the identity for an entity to exist in the virtual
world, then, kicking off with a suitable domain name that fetches recognition in the e-

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society for them on a newer plane where the people do not exist while the same people
exist might not be off to a bad start.


3.1 CLASSICAL USE OF TRADEMARKS

The use of trademark law is classically motivated by the goal of protecting understandings
that consumers have developed regarding the source or quality of goods or services.1 Under
Indian law Section 2(2) of The Trade Marks, Act of 19992 defines a mark said to be used in
terms of goods and services.

In the case of Qualitex Co. v. Jacobson Prods3 the Supreme Court noted that:

“Trademark law, by preventing others from copying a source-identifying mark, “reduce [s]
the customer’s costs of shopping and making purchasing decisions,” for it quickly and easily
assures a potential customer that this item — the item with this mark — is made by the
same producer as other similarly marked items that he or she liked (or disliked) in the past.
At the same time, the law helps assure a producer that it (and not an imitating competitor)
will reap the financial, reputation related rewards associated with a desirable product.”4

The origins of trademark law are in the law of deceit, rather than in trespass.5Therefore,
trademark law has been recognized for protecting consumers from “passing off” i.e. being
deceived about the source of goods or services in the marketplace, and encouraging
merchants to stand behind their goods or services by protecting the goodwill they have
developed in their trademarks.6 According to common law the use of trademark limitation
was for the purpose of promoting fair competition by requiring that a mark should be
placed “on” a product they were offering for sale7 in order to distinguish products on the
basis of their producers or manufacturers. Later decisions and statutes expanded the
concept somewhat, extending liability to cases in which the defendant placed the allegedly
infringing mark on labelling or signs used in the sale of goods or in advertising of goods or
services for sale.8 In the classical definition trademarks could only be granted to those
physical medium such as goods and the services provided by certain establishments.

3.2 USE OF TRADEMARKS TODAY


1 Qualitex Co. v. Jacobson Prods., 514 U.S. 159, 163-64 (1995)
2 Hereinafter ‘The Act’
3 Supra n.1
4 Ibid
5 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (“[T]he law of unfair
competition has its roots in the common-law tort of deceit: its general concern is with protecting
consumers from confusion as to source. While that concern may result in the creation of ‘quasi-
property rights’ in communicative symbols, the focus is on the protection of consumers, not the
protection of producers as an incentive to product innovation.”) Also see, Infra n. 6
6 Nature and Purpose of Protecting Trademarks, Lexis Nexus (2005) available at:
7 Margreth Barrett, Internet Trademarks Suits and the Demise of Trademark Use, University of
California Davis Vol. 39: 371[Hereinafter Margreth Barrett]
8 Margreth Barrett, also see, Air-Brush Mfg. Co. v. Thayer, 84 F. 640 (N.D. Ill. 1897)

2

In this age of technological advancement the internet has led to the evolution of laws such
as cyber laws. In addition this has also led to the change in classical concepts of laws such as
the use and extension of Trademarks to the realm of cyberspace such as trademarks
protection of keywords, Meta tags and ad-words. Earlier the use of trademarks was limited
only to the physical products and companies offering services however; today trademarks
have also transcended to virtual space.

Before explaining the relationship between cyber space and trademarks, we get to some
basic explanations about the Domain Name System which is often commonly abbreviated as
the DNS. This is pretty interesting tidbit piece of information since what this does is, naming
a particular service, a system, a network which are anyhow chained or linked to the World
Wide Web. It gives that web based service a definitive identity with which that would carry
its existence and visitors who represent much of the traffic over the web would connect it
with that identity.

Each network address possesses an Internet Protocol address of its own; the domain names
just make it simpler for the people to get to it which is just like a directory of data that is
represented by each of the entities who have been assigned the domain names respectively.
So, this is a certain component bearing combination of a set of desired alphabets that
differentiates oneself than the rest of the lot over the web by virtue of a unique name of its
own.

Trademarks therefore, can be basically or at least primarily anything which seems and
sounds like a word, combination of words, could be a symbol which is registered and is
established by the use. Out there, in the real world, the trademark works out as a
representative mark that can be perceived and sensed by the sensory systems of the people
who are seeing it and who can actually relate that mark with the one who owns it and is
being represented by the same. Now, laying this identical concept over the internet, it
pretty much does the same thing, the only difference is that here, it happens to be a virtual
world which does not contains the physical presence of the people but are a part to this
since that is being operated by those very same people in a direct way by their accord. They
access, relate, connect, use and interact the same way. That is exactly how the brand equity
is being established and achieved in an electronic way where going cyber is only one of
those many media.

A schematic representation of Trademark as a point of Value Enabler


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During the 1990’s when the internet became widely used a number of enterprising
individuals registered multiple domain names consisting of others’ marks, followed by
“.com” or another generic top level domain.9 They would register and buy the names with
the hoped to sell the names to the trademark owners at a profit, this is what we now call
cyber squatting. However when the plaintiffs who owned the trademarks would claim
infringement on such individuals the US courts said that mere act of “warehousing” such
domain names or “activating” them failed to constitute infringing or diluting use.10
Furthermore, in the case of Academy of Motion Picture Arts & Sciences v. Network Solutions,
Inc11 the court held that “registration of domain name did not constitute a sufficient
trademark use’ to support infringement, unfair competition or dilution claim.”

3.3 DOMAIN NAMES AND TRADEMARK

Domain names are nothing but just plain representative names that are assigned, allowed
or granted in place of a combination of numbers which usually forms up the Internet
Protocol address or the I.P. Address which might go like, 198. 41. 0. 7 and this domain name
is what that makes it seem and sound simpler which would be easy to get, remember and
recognize.

The dispute varieties may be incredibly vast and a place where the permutations are
something that are hard to keep a score. The only problem is, no two domain names can be
a replica of one another, but after incorporating a slight change to it, well, that will fetch the
registration of the applied one which is similar but not congruent to the initially registered
one. For example, hypothetically quoting: the registered domain name, www.ipchord.com
cannot have another domain name which goes exactly the same, but certainly with slight
variation it can, say, www.ipchord1.com or www.ipchordd.com etc., and the list seems to be
endless.

There has been a continuous aggressive over expansion while having the sole object to tap
into any forum that might be sensibly worthwhile. The internet has been such a storehouse

9 Margreth Barrett at p. 396
10 HQM, Ltd. v. Hatfield, 71 F. Supp. 2d 500, 508 (D. Md. 1999) (holding registration of domain name
and activation of name for e-mail purposes did not constitute an infringing or diluting use);
11 Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc ,989 F. Supp. 1276, 1279
(C.D. Cal. 1997)

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of opportunities that allows the marketers to win minds and hearts of their segment and
has started to play more vital role than never before. The best part is, without actually
having bulk of investments put on the line, this turns to be a sure thing which seldom
disappoints. These are pure assets rather liabilities. But, bigger the assets and seamless
chances one smells in here, greater are the challenges.

Some challenges that Trademarks face by the use of domain names can be categorised as:


Largely Decentralized
Self maintained telecommunications network
Lacking locational specificity
Universal Accessibility
Goes global with anonymity
Defies traditional rules of Jurisdiction
Capable of affecting daily course of transaction
Viewable and Usable

3.4 CYBERSQUATTING AND INTELLECTUAL PROEPRTY


With the whole trademark thing going on in here, over the web, we are directed right into
the domain names which carry the delegated and representative aspect of a mark
representing a particular subject or organization serving as a denote. But, on the sidewalk,
we are going past the borders, far beyond the local vicinity.

Well, that is just the start for any organization or institute branching out from the country of
its origin. When the boundaries get bigger, so does the need to have a country specific
domain name for others in the e-society to operate. Thus, every country bears a Country
Code Top-Level Domain which is quite commonly abbreviated as ccTLD. The ccTLD is an
exclusive top level domain in the internet primarily for various countries on the face of this
earth which satisfies all the reasonable criteria for being called as one.

Initially, the Internet Assigned Numbers Authority, abbreviated as, IANA is the operating and
monitoring body responsible for controlling and allotting ccTLDs and it then delegates to
that country which after having it ratified and confirming control takes over it thereafter.
Once, they take over that top level domain name of countries, they then have autonomous
control over those, effected immediately.

So, which means, the post delegation housekeeping, e-renovation, upgrading, maintenance
and management, security and support etc. rests on the country, which newly bears that. To
this, there is standardization over the entire backdrop though, meaning, a definitive set that
sets out the respective codes for their respective countries.

It is otherwise, the ISO 3166-1 for that matter introduced by the International Organization
for Standardization which sketches out the country codes which is derived after the country
names those are defined by the territories and possess a certain part of the geography. To
be a bit more specific, the standardized version for the country code is set out in the ISO
3166-1 alpha 2 where it prescribes a two letter country coding system which happens to be

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the most popular among the rest two others which prescribe a numeric version and a three
letters country code. For instance, the entire standardized country profile for internet
domain as a country code for India are: Alpha-2 Code - IN, Alpha-3 Code - IND, numeric code
- 356, ISO 3166-2 Code- ISO 3166-2: IN.

So, the prior discussed fact brings us to the registry for the country level internet domain
names. For example, the country India, which is mentioned above and earlier, has “.in” for it
to operate and that has the assent from the centre/the government of India. The operation
is undertaken by NIXI or the National Internet Exchange of India and this operates under
Section 25 of the Companies Act, 1956. All this does is, channelizing the traffic or the people
that have gone online and exist on a domestic scale inside India. Also, it checks on the
bandwidth circulation inside the country and takes steps for compensating due to non-
reliance on overseas countries to channel in International bandwidth and strives to make up
for it for not having done so.

After these things that have gone more prominent, they seem to have entrenched into
more of the aspects and disciplines that defy the general conventional methodologies of
operating business models at the current moment. But, whatever the case may be, with the
rise of the internet and its related areas, the world, including India has fast witnessed a
situation that was much unforeseen till now. This relatively newer platform is a bit tricky
and the pitfalls seem to be too many in numbers. The lack of clarity for protection especially
the issues which seek to have solutions that are powered by statutes are actually the ones
that are missing.

These pitfalls are those areas which the squatters take undue advantage of. Most of the
time, it has been observed that cybersquatting is the prime cause of violations of general
legal play which takes domain name disputes into account. Since, domain names can
virtually be registered by anyone, thus leaving behind a wiggle room for the players that
actually have the original trademark with the name associated with which they run their
businesses or exist. The squatters register the visually as well as phonetically similar
trademarks and thereafter they sell it by making it one of the tools for getting the leverage
and very often, they exorbitantly overprice it.

The Court in an Indian case of Manish Vij v. Indra Chugh,12 held that “an act of obtaining
fraudulent registration with an intent to sell the domain name to the lawful owner of the
name at a premium”. Many multinational companies like Tata, Bennett & Coleman, Mc
Donald’s etc were among the first victims of cyber squatting. Many cases are also decided
by the WIPO and ICANN.13

The law in India is silent with respect to cyber squatting specifically but there are means of
interpretations for the same and through court injunctions or through precedence of such
cases. For instance in the case of Yahoo! Inc. v. Akash Arora14 that was one of the first

12 Manish Vij v. Indra Chugh, AIR 2002 Del 243
13Ashwin Madhavan, Cyber Squatting is a Menace which has no Boundaries and is Similar to
Terrorism, Vol.1, Issue 2 (2007) available at:
<http://www.indialawjournal.com/volume1/issue_2/article_by_ashwin.html>
14 Yahoo! Inc. v. Akash Arora ,78 (1999) DLT 285

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reported case on cyber squatting, where the plaintiff is the registered owner of the domain
name “yahoo.com” succeeded in obtaining an interim order restraining the defendants and
agents from dealing in service or goods on the Internet or otherwise under the domain
name “yahooindia.com” or any other trademark/ domain name which is deceptively similar
to the plaintiff’s trademark “Yahoo. However, the U.S has specific laws against cyber
squatting which is known as the U.S. Anti-cyber squatting Consumer Protection Act (ACPA)
15, which is an expansion of the Lanham (Trademark) Act. Here a victim can either sue under
the provisions of the ACPA, or use the international arbitration system which was created by
the Internet Corporation of Assigned Names and Numbers or the ICANN.

Furthermore, the use of meta tags and keywords as trademarks have also evolved in the last
three decades which shall be discussed in detail in the latter part of this paper in order to
understand the use of trademarks in virtual cyberspace.

3.5 META-TAGS

3.5.1 WHAT ARE META-TAGS?

In the world of cyberspace web users generally consult search engines like Google, Yahoo
and the like, these are portals in cyberspace that help people find information on the
internet. A meta-tag is part of a Web site's underlying framework and can be viewed by
looking at the framework of the site. Some search services use meta-tags as an internal
index to sort and categorize the numerous sites on the Web.16 These search services locate
relevant Web sites by matching a searcher's parameters with various information from the
sites, including the Meta tags. The use of trademarks in the meta-tag causes the Web site to
appear in a search for the particular trademark, allowing the site to have more exposure
than it otherwise would have.17 In other words a meta tag is a coding statement in the
Hypertext Mark-up Language (HTML) which describes some feature of the contents of a
Web page.

Here’s an example:-
< head>
< title>Not a Meta Tag, but required anyway < /title>
< meta name="description" content="Awesome Description Here">
< meta http-equiv="content-type" content="text/html; charset=UTF-8">
< /head>18

The information that you provide in a meta tag which is used by searches to index a page so
that someone searching for the kind of information the page contains will be able to find it.
The meta tag is placed near the top of the HTML in a Web page as part of the heading.
HTML consists of tags, or text surrounded by less-than/greater-than (< and >) symbols.

15 Anti-cyber squatting Consumer Protection Act (ACPA) of 1999
16 Barbara Ann McCoy, An Invisible Mark: A Meta Tag Controversy, 2 J. Small & Emerging Bus. L.
377 1998
17 Supra n. 15 at p.379
18 Example provided by Kristine Schachinger, How to Use HTML mata tags, Search Engine Watch, 1
May, 2012, available at: <http://searchenginewatch.com/article/2067564/How-To-Use-HTML-Meta-
Tags> (Last visited 22, February, 2013)

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These tags format the document and browsers such as Microsoft Internet Explorer or
Netscape Communicator interpret them so the viewer can see what the author intended.
For example the author may tag text as bold in the following manner <b> this is bold </b> or
as italics <i> this is italics </i>.19 Thus, meta tags also provides information about the
document such as the document title and the author's e-mail address.20

3.5.2 META TAGS AND TRADEMARKS

A potential area for trademark infringement in cyberspace is the use of marks within the
body of the meta tag section of the source code. Keywords are a branch of the meta tag,
which are used by search engines to locate sites in the Internet. Therefore, the way in which
keywords are used in the meta tag section can often make your site being found easily on
the Internet or within search results where your site pops up. Thus, creating traffic from the
site of the trademark owner and diverting it to your own website when a web user
searchers on the internet. In addition we shall further discuss cases, which involves Meta
tags and trademarks whereby the infringement can be of two types namely competitor
infringement and dilution of meta-tags.

3.6 COMPETITOR INFRINGEMENT

In recent years there has been a number of abuses on meta-tags, one of the first reported
Meta tag case was Insituform Technologies Inc. v. National Envirotech Group.21 National
Envirotech, a competitor of Insutiform, implanted Insituform's trademarks ‘Insituform’ and
‘Insitupipe’ into the keyword meta tags of its web site. On the 1st of July 1997 a claim was
issued by Insituform, stating that National Envirotech’s actions amounted to unfair
competition that one business may not pass off their goods or services of those of another
or otherwise suggest a connection between them. The case was quickly settled upon
agreement from National Envirotech that they would desist and would agree to a
permanent injunction being entered. 22

3.7 DILUTION

In the USA the Federal Trademark Dilution Act23 represents a high water mark in the federal
recognition of trademark rights, for the Act creates a genuine property right in trademarks
separate and apart from any consumer confusion or deception.24 However; under The
Indian Trademarks Act, 1999 does not define the term ‘dilution of trademark’25 but it
introduced the concept of “well-known trademarks” which was defined in section 2 of the
Act of 1999, it further extended the protection to well known trademarks regardless of the

19 Andrew D. Murray, The Use of Trademarks as Meta Tags: Defining the Boundaries, 8 Int'l J.L. &
Info. Tech. 263 2000 [Hereinafter Andrew D. Murray]
20 Ibid at p. 266
21 Insituform Technologies Inc. v. National Envirotech Group, E.D. La. Filed 26 August 1997. Civil
Action No. 97-2064.
22 Andrew D. Murray at p. 267
23 Federal Trademark Dilution Act of 1995
24 Eric A. Prager, The Federal Trademark Dilution Act of 1995: Substantial Likelihood of Confusion,
Volume 7, Issue 1 (1996), Fordham Intellectual Property, Media and Entertainment Law Journal.
25The Indian TradeMark Act, 1999, available at:
<http://ipindia.nic.in/tmr_new/tmr_act_rules/TMRAct_New.pdf>, (Last visited 23, February 2013)

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registration of trademark. In addition, Section 11 of the Act of 1999 which states that any
application made for the registration of a trademark will be refused if it is similar to well-
known registered trademark, regardless of goods or services.

An example of dilution of trademarks in cyberspace is the case of Playboy Enterprises Inc., v.
Netscape Communications Corp.,26 where the Netscape engines sold keywords such as
“Playboy” and “Playmate,” which are trademarks belonging to Playboy Enterprises. Thus,
when searchers entered these trademarks/keywords, banner ads would pop up for adult
advertisements. The Ninth Circuit Court of Appeals found that when the banner ad was
displayed without identification of the source, such action on the part of the search engine
could be a trademark infringement under the theory of “initial interest confusion” as well as
possibly being a dilution of Playboy’s trademarks.

3.8 KEYWORDS

Search engines-such as Google, Yahoo!, or Altavista--allow a user to type in one or more
search terms, or “keywords,” that trigger the search program instantaneously to search the
Internet for websites in which the search term appears in the programming code.27 Thus,
keywords are part of meta-tags that are used by search engines to locate sites within the
Internet.

In the case of Brookfield Communications vs. West Coast Entertainment28, the defendant
West Coast used the term “moviebuff” in its keywords, which was a term actually a
registered trademark of plaintiff Brookfield. Even though the defendant owned the domain
name “moviebuff.com” the United States Court of Appeals for the Ninth Circuit held that
the use of the registered mark in the keywords amounted to a diversion of traffic from the
site of the plaintiff thus it was an unauthorized use of plaintiff’s registered mark and hence a
trademark infringement.

In the settled case of Reed lsevier, Inc v. Innovator Corp.29 as per the case files the plaintiffs
alleged that the Defendants Rice Innovator Corp. along with DoubleClick and AltaVista have
violated state and federal law by usurping the Plaintiffs' famous trademarks. These
trademarks identify the Plaintiffs' computerized legal and business information research
services. The Plaintiffs use the LEXIS, NEXIS and LEXIS-NEXIS trademarks as key words to
direct Internet users to their products however, the defendant Rice bought the rights to
some keywords that were trademarks belonging to the plaintiff. Thus, when someone
would search online by entering those keywords, an advertisement would come up on the
search engine page with the results, which advertisement was an ad for the defendant’s

26 Playboy Enterprises Inc., v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2001)
27 Kurt M. Saunders, Confusion is the Key: A Trademark Law Analysis of Keyword Banner
Advertising, Fordham Law Review, Vol 71, Issue 2. Also see, Sporty's Farm L.L.C. v. Sportsman's
Mkt., Inc., 202 F.3d 489, 493 (2d Cir. 2000) (“The most common method of locating an unknown
domain name is simply to type in the company name or logo with the suffix .com. If this proves
unsuccessful, then Internet users turn to a device called a search engine.”).
28 Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036 (9th Cir.
1999)
29 Reed lsevier, Inc v. Innovator Corp, 105 F.Supp.2d 816 (2000)

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company. Reed Elsevier ended the case by entering into settlement agreements with
Altavista and DoubleClick.30

3.9 AD-WORDS [CONSIM INFO – BHARAT MATRIMONY V. GOOGLE]

Similar to most commercial websites, search engines such as Google sell advertising space
on their web pages, particularly on pages that list search results these advertisements are
known as online ads or ad words. These banner ads are generally displayed at the top of the
screen above the search results. Most Internet search engine sites have begun to sell
“keyword banner advertisements.” Typically, a search engine displays an advertiser’s banner
ads in random rotation on web pages containing the search results. This allows the
advertiser to target its ads to reach a more receptive audience and thereby maximize the
effectiveness of its online advertising. 31In order to determine the use of ad words as
trademarks in India we shall briefly discuss the case of Consim Info ltd. v. Anr


Background

Defendant Google was sued by Plaintiff Bharat Matrimony which is a part of Chennai based
Consim Info Ltd. providing online matrimonial and related services through its registered
portal called ‘bharatmatrimony.com’.

Google India Pvt. Ltd, which runs the Google search engine in India was alleged for
infringement of the Plaintiffs trademark because of its ‘Keyword Suggestion Tool’ whereby
the Defendant displayed the competing matrimonial websites using keywords in the form of
ad words which are registered trademarks of the Plaintiffs.

The Plaintiffs claimed that the following words BharatMatrimony.com,
TamilMatrimony.com, TeleguMatrimony.com, BengaliMatrimony.com and
UrduMatrimony.com were used by Google as keywords in its ad words system.

Consim submitted that when a user typed, for example, ‘BharatMatrimony’ in Google's
search engine, this triggered sponsored links directing users to rival matrimonial websites
such as ‘shaadi.com’, ‘jeevansathi.com’ and ‘simplymarry.com’.

Issues of the case

Whether the Plaintiffs trademarks were generic or descriptive, where the Defendants
diluted the Plaintiffs Trademark?

Whether the Google was liable for trademark infringement for including Plaintiffs trademark
in its ad words?

Judgment



30 Ibid at p. 818
31 Supra n. 24

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The words TamilMatrimony.com, TeleguMatrimony.com, BengaliMatrimony.com and
UrduMatrimony.com are evidently the names of different languages, Bharat and Matrimony
are also general words thus are descriptive in nature. These languages have no synonyms
thus making the Plaintiffs have monopoly over the use of words. Section 35 of The Act
exempts the use of protected words for a bona fide description of trade. Thus the Court in
Tamil Nadu were in favour of the defendants, however they waited to get evidence so as to
distinguish whether the name of the company had acquired special meaning.

Since the nature of the trademark was descriptive and not distinctive the Court decided that
there could be no contributory infringement on the part of Google. The use of the
descriptive trademarks could not prove any malicious intention of the Defendant with the
view of infringing the trademark of the Plaintiff. The Court pointed out that Section 30 of
The Act which ‘allows honest practices in commercial matters’ contrary to Section 29(8) of
The Act. Thus the ad words used did not infringe upon the trade mark of the Plaintiff.

Thus the Madras High Court passed an interim ruling in favour of Google on the 30th of
September, 2010.

3.10 NEW GENERIC TOP LEVEL DOMAIN NAMES

The Internet’s domain-name system (DNS) allows users to refer to web sites and other
resources using easier-to-remember domain names (such as “www.icann.org”) rather than
the all-numeric IP addresses (such as “192.0.34.65”) assigned to each computer on the
Internet. Each domain name is made up of a series of character strings (called “labels”)
separated by dots. The right-most label in a domain name is referred to as its "top-level
domain" (TLD).32 gTLD is an acronym for generic top level domain, there is nothing alien
about domain names as we use it every time we long on to the internet, a domain is a web
page address such as www.yahoo.com, www.nic.gov. , here are some examples of gTLDs
.Com, .Net, .Gov, .Edu and the like. Furthermore, there is the ccTLD (country code top-level
domain name) that identifies a specific national domicile for an address. (For instance, .fr
for France and .mx for Mexico.)

When the DNS first started during the 1980s the original purpose was to make
communications between computers safer and faster. In this context, domain names were
used as labels covering the actual numerical addresses (the IP-numbers) that must be used
to make it possible for computers to communicate on the Internet. The task of the label is to
make the address more human-friendly and easier to remember.33

Times have changed gTLD no longer serve a single purpose it has now become more
technologically advanced and it has become big business as well. According to the ICANN,
the new gTLD program is an initiative that will enable the introduction of new gTLDs
(including both ASCII and IDN) into the domain name space.34 It is estimate, there are over

32 Top Level Domains (sTLDs), Internet Corporation for Assigned Names and Numbers, available at:
<http://archive.icann.org/en/tlds/> (Last visited 26 February, 2013)
33 Michael Bogdan & Ulf Manubach, Domain Names as Jurisdiction: Creating Property in Sweden, 3
Masaryk U. J.L. & Tech. 175 2009
34 New Generic Top Level Domain Names, ICANN, available at:

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1.8 billion Internet users worldwide, with nearly 200 million domain names registered and
about 90 million of them are dot-coms. The most popular top-level domains after dot-com
are .cn (China), .de (Germany), and .uk (United Kingdom). On average, around 120,000
domain names are registered everyday, or 5,000 per hour.35

By adding new gTLDs the ICANN says that they are easy to create and free up new space for
Internet addresses. However, gTLDs may lead to more confusion and pose a risk of
trademark infringement, cyber squatting, and cyber piracy.




3.11 NEW GTLDS AND DISPUTE RESOLUTION

The ICANN have recently set up certain mechanisms to deal with dispute resolution by
laying down procedures for new gTLDs in dispute resolution. It states that the procedures
were designed with an eye toward timely and efficient dispute resolution. Furthermore it
states that as part of the new gTLD programme the procedures would apply to all
proceedings administered by each of the dispute resolution service providers (DRSP), and
that each of the DRSPs has a specific set of rules that will also apply to such proceedings.36

Disputes can either be trademark based or those related to new gTLDs, the mechanism may
work in several ways. First, first-come, first-serve basis shall be followed in granting gTLDs
to applicants, unless neither applicant has completed the application process. ICANN will
determine the winner based a set of four ownership-based criteria in case the latter occurs.
In the event of a tie between the two parties, the gTLD will be auctioned to the highest
bidder.

Second, ICANN has collaborated with WIPO (World Intellectual Property Organization) to
ensure protection of intellectual property rights. During the evaluation of gTLD applications
ICANN states that it will accept all trademarks that are registered worldwide. ICANN may is
also publish any applications after evaluation to give trademark owners the chance to
protest an application in case of trademark infringement. Objection to gTLDs can be in the
form of community objections, a legal rights objection or a limited public Interest
objection.37

Finally, there are separate procedures implemented for the adult top level domain names
such as .xxx; Many companies believe, and rightfully so, that being associated with adult
material might adversely affect their trademark or brand. As such, ICANN has granted ICM

<http://newgtlds.icann.org/en/applicants/customer-service/faqs/faqs-en>
35 Eric Macramalla, Business of Domain Names, 3 Landslide 47 2010-2011
36 Attachment to Module 3 New gTLD Dispute Resolution Procedure, available at:
<https://www.google.co.in/search?q=NEW+GTLDS+AND+DISPUTE+RESOLUTION&aq=f&oq=new+
gTLD&sourceid=chrome&ie=UTF-8>
37 Introduction to ICANN New gTLD Dispute Resolution, International Chamber of Commerce,
available at: <http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/introduction-
to-icann-new-gtld-dispute-resolution/>

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Registry the .xxx TLD and ICM is allowing trademark owners to file applications requesting
that their trademark be prevented from being registered on this TLD.38

3.12 INDIAN LANGUAGE DOMAIN NAMES

3.12.1 THE IMPORTANCE OF HAVING INDIAN LANGUAGE ON THE INTERNET

India has the second largest population in the world, thus having a lot of scope for growth in
terms of internet users. Being a multilingual country there are certain barriers with people
using the internet, English not being a native language causes inability and discomfort while
using the internet for most individuals.

India is already has the third largest internet user base in the world after China and the US.
That's why analysts say companies need to look beyond English to create content and build
new technology to tap into this large emerging audience.39 Yahoo already offers its content
in Six Local Indian languages, with many Apps already recognising the need to reach out
to Vernacular users. Microsoft’s transliteration website BhashaIndia.com, which offers
digital translation and virtual keyboards has seen an upswing in membership from 50,000 in
2008 to 1,00,000 in 2010.40 Evidently domain names in Indian languages can become a
leading player in cyberspace, also allowing easy access of the internet for most people who
speak in vernacular languages.

The Centre for Development of Advanced Computing (C-DAC) has made efforts in spreading
awareness regarding IDNs or International Domain Names which may soon be in Indian
Languages.41 In 2011 The Internet Corporation for Assigned Names and Numbers (Icann)
has allowed India to register website addresses in seven regional languages --Hindi, Gujarati,
Urdu, Punjabi, Bengali and Telegu.42 In addition in the same year the National Internet
Exchange of India (NIXI) is giving out website addresses in Devnagari script which includes
languages like Hindi, Marathi, and Nepali.43

3.12.2 PROBLEMS WITH INDIAN LANGUAGE DOMAIN NAMES

The “Dynamic Keypad” is a keyboard which consists of language symbols instead of English
alphabets. The scripts for Indian languages are more complicated than those written in the

38 Timothy J. Maier, New Generic Top Level Domain Names: Dispute Resolution Mechanisms, Maier
& Maier Attorneys at Law, 31 August, 2011, available at: <http://www.postgrant.com/2011/08/new-
generic-top-level-domain-names-dispute-resolution-mechanisms.html>
39 Shilpa Kannan, Is Language The Key to Hooking India to the Web?, BBC News Business 9 July
2012, available at: <http://www.bbc.co.uk/news/business-18735792> [Hereinafter Shilpa Kannan]
40 Yahoo India Bets Big on Regional Languages, Business Standard, 3 February, 2011, available at:
<http://www.business-standard.com/article/technology/yahoo-india-bets-big-on-regional-languages-
112020300077_1.html>
41 Internet Names in India Languages Soon, IBN Live, 29 November, 2011, available at:
<http://ibnlive.in.com/news/internet-domain-names-in-indian-languages-soon/206757-60-119.html>
(Last visited 25 February 2013)
42 Language Domain Names Soon to Become Reality, The Times of India, 7 June, 2011, available at:
<http://articles.timesofindia.indiatimes.com/2011-06-07/computing/29629021_1_domain-names-web-
addresses-regional-languages>
43 Ibid

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Roman alphabet thus, attempts are still being made to adopt Chinese and Korean
technology to make the use of Indian scripts more compatible with the computer and other
communicative electronic device. In this regard Noida-based start-up Luna Ergonomics has
developed a product called the Panini Keypad to address this issue. People can send text
messages and operate their phone in any one of 26 Indian languages, by using an
application downloaded on to their mobile.44 Clever texting was released in 2012 by Panini45
to make texting less taxing for individuals using vernacular language.
A large problem with respect to filing for a domain name in the Indian script would be the
repeat use of English word repeated in the Indian language script such as words like ‘Tata’,
‘Google’ or ‘Gucci’ which can be misused by being written in the Hindi script instead.
Questions thus arise as to whether such words written as Hindi domain names are a cause
for infringement? Thus, proper set guidelines should be put into place in the Indian IT Act
along with Indian IPR Laws such steps need to be included so as to protect such trademarks.
Word like ‘Bharat’, ‘Taj’, ‘Shaadi’ are Hindi words but are written in the English-Roman script
this should also be analysed for the same so as to avoid lacuna of law in the future.

The recent Indian case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. turned out to be
the first case reaching the apex Supreme Court. Hereafter this one, it became absolutely
crystal that India really did not have nor has any concrete dispute resolution mechanism
when that comes out to domain name issues. The litigation was decided in favor of the
appellants, that s the Satyam Infoway on basis of prior user of that trademark with which
reputation and goodwill are attached which definitely had monetary gains chained to the
same. A general foresight was given like the likelihood of confusion, deception, passing off
and misrepresentation; all of which that are very conventional and are otherwise not
explicitly mentioned in India’s Trademark law or any other statute books involving the IP
regime for that matter, specially the cases involving domain name disputes. Thus, be it
judiciary to prescribe, adjudicate or to enforce, the courts have been continually more into a
legal than a factual dilemma as to the delivery of appropriate legal remedies are concerned
for meeting the traditional notions of fairplay.

3.13 THE EVOLUTION OF THE UDRP

Coming to the issue of Cybersquatting, we realize that it is an emerging problem which is
massive in magnitude and that can spiral out of control within no time, as the squatters
tend to be extremely opportunistic. One of the things that hold most of its critical mass is
the fact that it is created in a bad faith where money frequently is the prime motive. The
money making by the squatters is not what bothers the rest, but it s after effects. It
adversely affects the goodwill of the company, ruins and tampers the reputation, tarnishes
and dilutes the image of the company. This leads to an overall effect and a negative end
result on the performance and eventually the turnovers. Quite obviously, the squatters are
not generally the rightful legitimate owners; they just make one, register it and sell it later
to those very same people but at an incremental unmatched price. So, under this same
technique umbrella, the squatters make use of another strategy called as typo squatting,

44 Shilpa Kannan
45 Our Story, Panini Keypad website, available at: <http://paninikeypad.com/aboutus/our-story.php>
(Last visited 26 February 2013)

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which are basically twisted or deliberately misspelled trademark names among those which
get to have registrations performed and undertaken in bad faith.

Just when it seems that all the hard work securing a share cyber way is going down, there
comes Uniform Domain Name Dispute Resolution Policy, in short, UDRP for the rescue. It s a
systematic procedure that is set forth by the ICANN, it works as per it s policies accordingly.
With the UDRP, we are getting closer to the path in pursuit of legal remedies for domain
name disputes. When the internet era was somewhat new, a decade back, the corporate
entities were starting to realize the endless potential this cyber world that could bring them.
But, even right then, when cases arose which included such similar problems, they knew it
was going to spoil and leave the people astray regarding as to the identification of original
trademark owner or the one who owns all the rights rightfully. In order to make it work out
more effectively on a global scale, few providers were put forward in order to facilitate the
same. Meanwhile, as the saying goes, “prevention is better than cure”, prior to registration,
the registrant need to ratify and warrant a whole range of conditions which may include non
violation, non encroachment of third party rights etc., well, just so if it happens due to some
odds, then the parties are subjected to arbitration and an out of the court settlement, in
fact, this most certainly happens to be one of the essential clauses that are precautionary in
nature. On the plus side, the only motto is to drag in concrete pillar grounds instead of
anticipatory grounds that may have some lacunae.

Pre-requisites for igniting a UDRP motion:


Domain name that can be potentially deceiving
Bad Faith
Illegitimate interest

PARAMETERS FOR A CHECK ON BAD FAITH


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3.14 FROM UDRP TO E-UDRP

There has been a growing awareness for going electronic way, starting from the internet.
Thus, as expected, taking a front foot as the same, all from the house of UDRP, ICANN has
stepped in. The URDP now goes e-UDRP. So, with this change which this transformation
fosters pulls in quite a few proposed amendments just in order to provide an enabling base
to start off with, being introduced. They check on the data which flows in although
“statistically remote” in the new change of style in filing. This is really new since it allows the
parties to let go of the conventional practice of hitting the pen and the paper. Perhaps, the
most important thing we see as a change is to curb on the rising costs, hence, de-
materializing, needless to say, will bring down the overall expenses and assists in cost
cutting. So, considering all that, chances are immensely high that the WIPO may come up
with an exclusive set of eSupplemental rules.

Down below are some the new improved clichés which gives this e form of UDRP an
improved edge:


Going Green [Saving Trees]
Efficiency [Saves Time]
Faster [Processes faster]

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Modern [Electronic transmission]
Futuristic [Automated]

3.15 .IN DOMAIN NAME DISPUTE RESOLUTION POLICY

By far, we have been covering the journey all throughout across the lengths and breadths of
the various UDRP policies that have impact globally, after narrowing down a little bit, it
leads us to another part of it, which prevails in India, in other words, the INDRP.

Some of the essentials of the .IN Domain Name Dispute Resolution Policy [INDRP] are as
follows:


Purpose:

This .IN Domain Name Dispute Resolution Policy (the "Policy") sets out the terms and
conditions to resolve a dispute between the Registrant and the Complainant, arising out of
the registration and use of the .in Internet Domain Name.

The Registrant's Representations

By applying to register a domain name, or by asking a Registrar to maintain or renew a
domain name registration, the Registrant represents and warrants that:


the statements that the Registrant made in the Registrant's Application
Form for Registration of Domain Name are complete and accurate;
to the Registrant's knowledge, the registration of the domain name will
not infringe upon or otherwise violate the rights of any third party;
the Registrant is not registering the domain name for an unlawful
purpose; and
the Registrant will not knowingly use the domain name in violation of any
applicable laws or regulations.

It is the Registrant's responsibility to determine whether the Registrant's domain name
registration infringes or violates someone else's rights.

3.13.1 TYPES OF DISPUTES

Any Person who considers that a registered domain name conflicts with his legitimate
rights or interests may file a Complaint to the .IN Registry on the following premises:

the Registrant's domain name is identical or confusingly similar to a name,
trademark or service mark in which the Complainant has rights;
the Registrant has no rights or legitimate interests in respect of the domain name;
and

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the Registrant's domain name has been registered or is being used in bad faith.46
The Registrant is required to submit to a mandatory Arbitration proceeding in the event that
a Complainant files a complaint to the .IN Registry, in compliance with this Policy and Rules
thereunder.47
3.13.2 PROCEDURE OF DISPUTE RESOLUTION
The .IN Registry appoints an Arbitrator out of the list of arbitrators maintained by the
Registry. The List of the Arbitrators is be published on line by the .IN Registry on its website
at www.registry.in.48
The Arbitrator conducts the Arbitration Proceedings in accordance with the Arbitration &
Conciliation Act 1996 as amended from time to time and also in accordance with this Policy
and rules provided thereunder.49
3.13.3 FEES
Except as otherwise stated in this policy or the Rules hereunder, all fees charged by the .IN
Registry in connection with any dispute pursuant to this Policy shall be paid by the
Complainant.50

3.13.4 INVOLVEMENT OF REGISTRY AND THE REGISTRAR IN ARBITRATION PROCEEDINGS
The Registry and the Registrars shall not participate in the domain name dispute resolution
proceedings in any capacity or manner other than providing the information relevant to the
registration and use of the domain name upon the request of the Arbitrator. Neither the
Registry nor the Registrar shall be liable for any decisions rendered by an Arbitrator.51
3.13.5 REMEDIES
The remedies available to a Complainant pursuant to any proceeding before an Arbitrator
shall be limited to requiring the cancellation of the Registrant's domain name or the transfer
of the Registrant's domain name registration to the Complainant. Costs as may be deemed
fit may also be awarded by the Arbitrator.52
3.13.6 NOTIFICATION AND PUBLICATION

46

http://www.inregistry.in/.IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20(INDRP) ]
47 ibid
48 ibid
49 ibid
50 ibid
51 ibid
52 ibid

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All decisions under this Policy will be published in full over the Internet, except when an
Arbitration Panel decides in an exceptional case to edit portions of its decision.
The technology dynamics and its allied industries are undergoing through a phase of
continuous transition in any and every given array of discipline in a linear progression and so
does the statutes governing their regulation striving to streamline the compliance factor.
The complexity in the trademark law regime over the Intellectual Property ecosystem
related to cyber niche carries the sole object to provide an unprecedented clarity in every
possible corner while striking a balance for the interests of enhancing monetization, driving
commercialization, securing better protectability and taking the pulse for innovation and
recognition in a scale of continuum where they believe that things are necessary to pro
activate as they navigate their journey to the future.

The radio took approximately four decades to have about 50 Million users, but it took less
than four years for Facebook to accomplish the same. It quite robustly proves that it is
undoubtedly a game changer and a trend setter. The heart of the matter is, to some
executives, particularly those who visualize the internet and web as randomly geared
monotonous user generated content websites which tends to pull in and trigger an influx of
young mass and a potential which to it s best just merely bears a packet with contents
having empty calories than the real content.

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